Detailed Action
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Claims 1 – 18 are pending and are the subject of this office action. This is the first office action
on the merits of the claims.
Claim Objections
Claims 3 – 5, 15 and 18 objected to because of the following informalities: a decimal point instead of a comma should be used to indicate filter parameters that are not whole numbers. Appropriate correction is required.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, 9, and 14 and 16 are rejected under 35 U.S.C. 102 as being anticipated by US 8739802 B2 (Fagg).
Regarding claim 1, Fagg teaches a rod-shaped smoking article (cigarette) comprising a lighting end (upstream end) and a mouth end (column 1 lines 64 – 68). The mouth end piece contains a filter element. The filter element incorporates an effective amount of an adsorbent material such as a carbonaceous material (e.g., a charcoal or activated carbon type material) (column 2 lines 4 – 7). The filter includes a first filter segment (32) positioned adjacent one end of the tobacco rod (12). The first filter segment (32) includes filter material (40). Within the filter material (40) of the first segment (32) is dispersed a plurality of particles of an absorbent (50). Within the filter material (40) of the first segment is also dispersed a plurality of breakable capsules (52) (column 4 lines 24 – 33; figure 2). The encapsulated flavoring agent is typically in the form of a plurality of breakable capsules, such as capsules comprising an outer shell and a payload comprising a flavoring agent contained within the shell (column 2 lines 51 – 54). The filter element (26) possesses a second filter segment (36) longitudinally disposed relative to the first segment (32) and positioned at the extreme mouth end of the cigarette (10). The second filter segment (36) includes filter material (48) (e.g., cellulose acetate tow impregnated with plasticizer, such as triacetin) (column 4 lines 46 – 51; figure 2). Figure 1 shows the filter (26) extending along an axis between the upstream end (18) and the mouth end (20). Figure 1 also shows the mouth end (20) and the upstream end (18) as either ends of the same cigarette, in which case they would be in fluid communication.
Regarding claim 2, Fagg teaches a filter as described in claim 1. Fagg further teaches that the filter material can vary and can be any material of the type that can be employed for providing a tobacco smoke filter for a cigarette. Preferably, a traditional cigarette filter material is used, such as cellulose acetate tow, gathered cellulose acetate tow, gathered cellulose acetate web, polypropylene tow, gathered paper, strands of reconstituted tobacco, or the like (column 8 lines 1 – 7).
Regarding claim 9, Fagg teaches a filter as described in claim 1. Fagg further teaches that the filter element incorporates a plurality of breakable capsules incorporating at least one flavoring agent for enhancing or otherwise altering the sensory characteristic of mainstream smoke (column 2 lines 16 – 20). The first filter segment (32) is positioned adjacent one end of the tobacco rod (12) (upstream end). The first filter segment (32) includes filter material (40). Within the filter material (40) of the first segment is dispersed a plurality of particles of an absorbent (50). Within the filter material (40) of the first segment is also dispersed a plurality of breakable capsules (52) (column 4 lines 24 – 33; figure 2).
Regarding claim 14, Fagg teaches a filter as described in claim 1. Fagg further teaches that the filter element (26) is circumscribed along its outer circumferential or longitudinal periphery by a layer of outer plug wrap (28). The outer plug wrap (28) overlies each of the first filter segment (32) and the second filter segment (36), so as to provide a combined, two-segment filter element (column 4 lines 57 – 61; figures 1 & 2).
Regarding claim 16, Fagg teaches a filter as described by claim 1. Fagg further teaches a smoking article (10) in the form of a cigarette including a generally cylindrical rod (12) of a charge or roll of smokable filler material contained in a circumscribing wrapping material (16) (column 3 lines 60 – 65; figure 1). The filter element (26) is positioned adjacent one end of the tobacco rod (12) such that the filter element and tobacco rod are axially aligned in an end-to-end relationship, preferably abutting one another (column 4 lines 16 – 20; figure 1). The cylindrical rod (12) bordering the filter (26) reads on the claim limitation of delimiting a downstream end.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over US 8739802 B2 (Fagg) as applied to claim 1 above, and further in view of both US 12550934 B2 (England) and US 20220304369 A1 (Grishchenko ‘369).
Fagg teaches a filter as described by claim 1. Fagg does not teach that the upstream end filter portion has a pressure drop per unit length between 4 and 10 mmWG/mm, if the upstream end filter portion contains the flavoring capsule; and between 0.01 to 2 mmWG/mm if the flavoring capsule is not contained in the upstream end filter portion, wherein the pressure drop is determined by the ISO 6565:2015 standard. England teaches a filter for an aerosol generating device (column 1 lines 47 – 48) and that the filter may be between 8 and 14mm in length (column 7 lines 36 – 37). The pressure difference across the filter may be in the range of 30 to 90 mmH2O (column 3 lines 6 – 7). As the pressure drop of the filter is between 30 and 90 mmH2O and the filter is between 8 and 14mm, this means that the pressure drop per mm filter would be between 2.14 mmH2O/mm and 11.25 mmH2O/mm. This overlaps the claimed range of a pressure drop of 4 – 10 mmWG/mm for an upstream end filter containing a flavoring capsule. Overlapping ranges are prima facie evidence of obviousness. See MPEP 2144.05
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the filter of Fagg to have the air pressure drop of England, with reasonable expectation of success, because England indicates that a pressure difference in this range is particularly suitable because it is high enough to retain the aerosol modifier in the filter after the capsule has broken, thereby providing sustained release over time, and it is low enough to let the aerosol pass through the filter and provide an acceptable consumption experience (column 3 lines 9 – 14).
Fagg modified by Lord teaches an article with an upstream end filter portion with a pressure drop between 4 and 10 mmWG/mm. Fagg modified by lord does not teach a pressure drop of between 0.01 to 2 mmWG/mm if the flavor capsule is not contained in the upstream filter portion. Grishchenko ‘369 teaches an article for use in a non-combustible aerosol provision system, the article comprising an aerosol generating material, a mouthpiece, a first and second body (filter) downstream of the aerosol generating material, and a cavity between the first and second filter containing a capsule (paragraph 4). Grischenko further teaches that the pressure drop across both filters (4a, 4b) can be between 0.3 and 5 mmWG/mm (paragraph 80). Since the capsule of Grishchenko ‘369 is not in the upstream end filter portion, this overlaps the claimed range of 0.3 mmWG/mm to 2 mmWG/mm. Overlapping ranges are prima facie evidence of obviousness. See MPEP 2144.05
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the filter of Fagg to have the capsule in a cavity and have the pressure drop range of Grishchenko ‘369, with reasonable expectation of success because Grishchenko indicates that pressure drops in this range have been found to allow sufficient aerosol, including desirable compounds such as flavor compounds, to pass through the mouthpiece to the consumer (paragraph 114). Additionally placing the capsule in a cavity allows for movement of the capsule within the cavity. This allows the user to be provided with a tactile and aural indication of the existence of the capsule within the article. This indicates to the user whether the capsule has been broken or not (paragraph 61).
Claims 4, 12, 13 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over US 8739802 B2 (Fagg) as applied to claims 1, 9 and 16 above, and further in view of US 20230025403 A1 (Grishchenko ‘403).
Regarding claim 4, Fagg teaches an article as described in claim 1. Fagg does not teach that the density of the filter paper in the mouth end filter portion is between 0.1 mg/mm3 and 0.3 mg/mm3. Grishchenko ‘403 teaches an article for use in a non-combustible aerosol provision
system, the article comprising: an aerosol generating material, and a downstream portion located
downstream of the aerosol generating material, wherein the downstream material comprises a body of
material comprising cellulose (paragraph 3). The body of material reads on the claim limitation
of a filter. Grishchenko ‘403 further teaches that the body (6) has a density of between 0.5 mg/mm3 and 0.15 mg/mm3 (paragraph 199). As Grishchenko ‘403 teaches the same material for the mouth end and upstream ends of the filter, this range overlaps the claimed range of 0.1mg/mm3 to 0.3mg/mm3. Overlapping ranges are prima facie evidence of obviousness. See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the mouth end filter portion of Fagg to have the filter density of Grischenko ‘403, with reasonable expectation of success because Fagg does not specify a density for the filter, and one of ordinary skill in the art would be motivated to look to similar filters for workable ranges of densities for filter paper. This involves applying known densities to a similar filter to yield predictable results.
Regarding claims 12 and 13, Fagg teaches a filter as described by claims 1 and 9. Fagg teaches that the filter element (26) is circumscribed along its outer circumferential or longitudinal periphery by a layer of outer plug wrap (28). The outer plug wrap (28) overlies each of the first filter segment (32) and the second filter segment (36), so as to provide a combined, two-segment filter element (column 4 lines 47 – 61; figures 1 & 2)
Fagg does not teach that the upstream end filter portion comprises an upstream end filter wrapper having a basis weight above 25 gsm or above 45 gsm. Grishchenko ‘403 teaches that the filter is wrapped in plug wrap (7) (paragraph 143; figure 5) and that the plug wrap (7) has a basis weight of between 20 and 110 gsm (paragraph 163). As both Grishchenko ‘403 and Fagg teach one plug wrap surrounding the entire filter (both upstream and downstream portions) then this reads on the claim limitation of an upstream end filter wrapper. The basis weight range of between 20 and 110 gsm overlaps the claimed range of greater than 25 gsm for claim 12 and greater than 45 gsm for claim 13. Overlapping ranges are prima facie evidence of obviousness. See MPEP 2144.05
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the filter wrapper of Fagg to have a basis weight within the range of Grishchenko ‘403, with reasonable expectation of success, because Grishchenko ‘403 indicates that higher basis weights of plug wrap increase the hardness of the mouthpiece (paragraph 163). Additionally, Fagg does not specify a basis weight for the filter wrapper, and one of ordinary skill in the art would be motivated to look to similar filters for workable ranges of basis weights for plug wrap paper. This involves applying known basis weights to a similar filter wrappers to yield predictable results.
Regarding claim 17, Fagg teaches an aerosol generating article as described by claim 16. Fagg does not teach that the aerosol generating article further comprises a cooling or distancing element interposed between the aerosol generating substrate and the filter. Grishchenko ‘403 teaches that the mouthpiece includes a tubular portion (4a) formed by a hollow tube, also referred to as a cooling element. The mouthpiece (2) includes a body of material (6) downstream of the tubular portion (4a), adjacent to and in an abutting relationship with the tubular portion (4a) (paragraph 142; figure 5). Figure 5 further shows the tubular portion (4a) abutting the aerosol generating material (3) and in between both the filter (6) and the aerosol generating material (3).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the smoking article of Fagg to include a hollow tubular portion of Grishchenko ‘403, with reasonable expectation of success, because Grishchenko ‘403 indicates that the mouthpiece comprises a cavity having an internal volume grater than 450mm3. Providing a cavity of at least this volume has been found to enable formation of an improved aerosol. Such a cavity provides sufficient space within the mouthpiece to allow heated volatilized compounds to cool, therefore allowing the exposure of the aerosol generating material to higher temperatures than would otherwise be possible (paragraph 243).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over US 8739802 B2 (Fagg) as applied to claim 1 above, and further in view of US 20210051997 A1 (Bonici).
Fagg teaches a filter as described by claim 1. Fagg does not teach a density of the impregnated charcoal paper in the upstream end filter portion is between 0.120mg/mm3 and 0.220mg/mm3. Bonici teaches filters that have enhanced hardness for aerosol-generating articles (paragraph 1). And that the filters of the present invention may include additional material such as activated carbon. Bonici further teaches that the filters have a preferred density between 0.12g/cm3 and 0.15g/cm3 (paragraph 32). As 1g/cm3 = 1mg/mm3 this overlaps the claimed range of 1.120mg/mm3 – 2.220mg/mm3. Overlapping ranges are prima facie evidence of obviousness. See MPEP 2144.05
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the impregnated charcoal filter of Fagg to have the density of Bonici, with reasonable expectation of success, because Bonici indicates that filter densities above this level increase draw resistance to undesirable levels and may filter too much aerosol, and thus prevent a sufficient amount of aerosol from being delivered to the user (paragraph 32). Additionally, Fagg does not specify a density for the charcoal impregnated filter paper, and one of ordinary skill in the art would be motivated to look to similar filters for workable ranges of density for charcoal impregnated filter papers. This involves applying known densities to a similar filter to yield predictable results.
Claims 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over US 8739802 B2 (Fagg) as applied to claim 1 above, and further in view of US 20220304369 A1 (Grishchenko ‘369).
Regarding claim 6, Fagg teaches a filter as described by claim 1. Fagg does not teach that the filter comprises a cavity middle portion extending between the upstream end filter portion and the mouth end filter portion and wherein the flavoring capsule is located in the cavity middle portion. Grishchenko ‘369 teaches an article for use in an aerosol provision system, the article comprising aerosol generating material, and a mouthpiece comprising a filter (paragraph 4). And that the bodies of material (4a) and (4b) can be formed from paper, in a similar way to paper filters known for use in cigarettes (paragraph 77; figure 1B). The bodies of material (4a, 4b) read on the claim limitation of an upstream end and mouth end filter portion. Grishchenko ‘369 further teaches that the mouthpiece (2) comprises a first body of material (4a) and a second body of material (4b). The second body of material (4b) is downstream of the first body (4a) and is offset from the first body (4a) so as to define a cavity (5) between the first body (4a) and the second body (4b). A breakable capsule is disposed in the cavity (5). In use, the user breaks the capsule (6) to release the components of the capsule, such as a flavorant (paragraph 60; figure 1B).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the filter of Fagg to contain a cavity for a flavoring capsule of Grishchenko ‘369, with reasonable expectation of success, because Grishchenko ‘369 indicates that providing the flavorant inside a cavity can allow for movement of the capsule within the cavity. This allows the user to be provided with a tactile and an aural indication of the existence of the capsule within the article. This can indicate to the user whether the capsule has been broken or not (paragraph 61).
Regarding claim 7, Fagg modified by Grishchenko ‘369 teaches an article as described by claim 6. Grishchenko ‘369 further teaches that the cavity (5) has a diameter (D1) of about 5mm and a length (L) of 4mm. The capsule (6) is substantially spherical in shape and has a diameter (D2) of 3mm (paragraph 62; figure 1B). As the cavity diameter is 5mm and the capsule diameter is 3mm the capsule would be 0.6 times the diameter of the cavity which is within the claimed range of above 0.4 times the diameter of the cavity. If a prior art reference discloses a point or range within the claimed range, the prior art anticipates the claim. See MPEP 2131.03 (I).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the filter of Fagg to contain the cavity and capsule with the dimensions of Grishchenko ‘369, with reasonable expectation of success, because Grishchenko ‘369 indicates that the diameter of the cavity being greater than the length of the cavity allows transverse range of movement of the capsule to be greater than longitudinal range of movement. When the user shakes the article, the movement of the capsule within the cavity is mainly in a transverse direction. This allows the user to be provided with a tactile and an aural indication of the existence of the capsule within the article. The limited longitudinal range of the movement of the capsule compared to its transverse movement aids the consumer in accurately locating the capsule longitudinally and therefore in breaking the capsule (paragraph 61).
Claims 8 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over US 8739802 B2 (Fagg) as applied to claims 1 and 9 above, and further in view of US 20210244077 A1 (Lord).
Regarding claim 8, Fagg teaches an article as described by claim 1. Fagg does not teach that the flavoring capsule is located in the mouth end filter portion. Lord teaches an aerosol-forming article comprising an aerosol-forming substrate and a filter element having a hollow bore extending from the downstream axial end of the substrate to the downstream axial end of the article (paragraph 21). Lord further teaches a terminal filter element at the downstream/mouth end of the article/consumable (paragraph 109). The terminal filter element includes a capsule containing a liquid flavorant. The capsule can be crushed by the user during smoking of the article/consumable to release the flavorant (paragraph 115).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the mouth end filter of Fagg to contain the capsule of Lord, with reasonable expectation of success, because adding capsules to the mouth end filter provides improved and quicker access of the flavorants to the mouth/tongue of the user thus increasing the flavor profile of the article.
Regarding claim 11, Fagg teaches a filter as described by claim 9. Fagg does not teach a second flavoring capsule located in the mouth end filter portion. Lord teaches a terminal filter element at the downstream/mouth end of the article/consumable (paragraph 109). The terminal filter element includes a capsule containing a liquid flavorant. The capsule can be crushed by the user during smoking of the article/consumable to release the flavorant (paragraph 115). Modifying Fagg with Lord would add a second capsule in the mouth end filter portion, in addition to the capsule(s) in the upstream filter portion of Fagg.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the mouth end filter of Fagg to contain the capsule of Lord, with reasonable expectation of success, because adding capsules to the mouth end filter provides improved and quicker access of the flavorants to the mouth/tongue of the user thus increasing the flavor profile of the article. And adding additional capsules to the filters of Fagg can increase the profile, intensity and longevity of flavor.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over US 8739802 B2 (Fagg) and US 20210244077 A1 (Lord) as applied to claim 8 above, and further in view of US 8739802 B2 (Fagg).
Regarding claim 10, Fagg modified by Lord teaches a filter as described by claim 8. Fagg further teaches that the diameter of the capsules is typically between 0.25mm to about 3.5mm (column 2 lines 63 – 64). The filter element (26) may have a generally cylindrical shape, and the diameter thereof may be essentially equal to the diameter of the tobacco rod (column 4 lines 20 – 23). Cigarettes are rod shaped and can have diameters of about 7.5mm (column 5 lines 58 – 59). As Fagg describes embodiments with a capsule having a diameter of 3.5mm and a filter with a diameter of 7.5mm, then Fagg describes a filter with a capsule of 0.46 times the diameter of the filter. This is within the claimed range of greater than 0.4 times the diameter of the filter portion. If a prior art reference discloses a point or range within the claimed range, the prior art anticipates the claim. See MPEP 2131.03 (I).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over US 8739802 B2 (Fagg).
Regarding claim 15, Fagg teaches a filter as described in claim 1. Fagg further teaches that the diameter of the capsules is typically between about 0.25mm to about 3.5 mm (column 2 lines 63 – 64). 0.25mm to 3.5mm overlaps the claimed range of between 2.5mm and 4.5mm. Overlapping ranges are prima facie evidence of obviousness. See MPEP 2144.05
Regarding claim 18, the linear density of charcoal is a result effect variable modifying the filtration capacity of the filter by altering the amount of charcoal added to the filter. Since applicants did not provide any criticality regarding the recited parameter, one skilled in the art would have found it obvious to optimize the charcoal content of the filter through routine experimentation for optimum result, consult MPEP 2144.05 II.
Conclusion
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/BRENDON THOMAS JUENGST/Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749
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